Ex Parte Dumont

Patent Trial and Appeal Board

Feb 12, 2016

11329939 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111329,939 0111112006
24498 7590 02/17/2016
Robert D, Shedd, Patent Operations
THOMSON Licensing LLC
4 Research Way
3rd Floor
Princeton, NJ 08543
FIRST NAMED INVENTOR
Frank Dumont
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
PA050008 6935
EXAMINER
GUPTA, PARUL H
ART UNIT PAPER NUMBER
2627
NOTIFICATION DATE DELIVERY MODE
02/17/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
uspto@technicolor.com
pat. verlangieri@technicolor.com
russell. smith@technicolor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK DUMONT
Appeal2014-003576
Application 11/329,939
Technology Center 2600
Before JOHNNY A. KUMAR, CATHERINE SHIANG, and
LINZY T. McCARTNEY, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-003576
Application 11/329,939
INVENTION
The invention is directed to a method of adjusting recording quality
when insufficient storage space remains. Spec. 2:23-26. Claim 1 is
reproduced below:
1. A method for performing pre-programmed
recording of two or more pre-programmed recordings, each pre-
programmed recording having an associated specified recording
bit rate, the method comprising:
determining the storage space required on a recording
medium for performing the two or more pre-programmed
recordings with the specified recording bit rate;
before starting recording of a first pre-programmed
recording, comparing the available storage space on the
recording medium with the required storage space;
in case the required storage space exceeds the available
storage space, retrieving for each pre-programmed recording a
user-settable priority indicator associated with the pre-
programmed recording;
reducing the specified recording bit rate for one or more
of the pre-programmed recordings taken as a whole, based on a
priority basis in accordance with the retrieved user-settable
priority indicators such that the required storage space no longer
exceeds the available storage space; and
Bruls
Moni
starting recording of the first pre-programmed recording.
REFERENCES
US 2002/0012530 Al
US 2003/0002581 Al
REJECTIONS AT ISSUE
Jan. 31, 2002
Jan. 2,2003
Claims 1-9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bruls in view ofMoni. Non-Final Action 3.
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Appeal2014-003576
Application 11/329,939
ISSUE
The dispositive issue on appeal is whether the Examiner has erred in
rejecting claim 1under35 U.S.C. § 103(a) as being unpatentable over Bruls
and Moni. In particular, the issue turns on whether Bruls teaches or suggests
a user-settable priority indicator, as recited in independent claim 1
(hereinafter, "the disputed limitation").
ANALYSIS 1
Claim 1 recites "retrieving for each pre-programmed recording a user-
settable priority indicator associated with the pre-programmed recording"
(emphasis added).
The Examiner relies on paragraph 26 of Bruls for teaching bit rates of
given program retrieved from the compression unit that calculates the
parameters. Non-Final Action 3. In particular, the Examiner states:
[Bruls] Paragraph 0026 explains that the bitrate is part of the
,..J c: ,..J • • t. . . . . ,..J. preue1meu settmg, meamng tuat it serves as a pnonty muicator.
The user inputs the program type and the bit rate for the program,
as giving in paragraph 0026 as well. Thus, these properties are
user-settable and function as a priority indicator by specifying
the bit rate.
Ans. 7.
Appellant contends that the bit rate described in Bruls is neither "user-
settable" nor functions as "priority indicator." App. Br. 11. Appellant
further contends that the "parameters [of Bruls] are neither user settable nor
1 Appellant makes additional arguments with respect to claim 1. App. Br.
16-21. We do not reach these additional issues since this issue is dispositive
of the appeal.
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Appeal2014-003576
Application 11/329,939
provide the function of indicating a priority." App. Br. 14. Thus, Appellant
contends that Bruls fails to disclose or suggest "retrieving for each pre-
programmed recording a user-settable priority indicator associated with the
pre-programmed recording." App. Br. 10.
A priority is a precedence establishing an ordering of importance.
The bit rate of Bruls is a quantity rate of generated data. See Bruls i-f 25.
Bruls paragraph 25, lines 6-8 disclose "the average bit rate can be controlled
by setting parameters via the control input 26 of the controller 39." Setting
the parameters via the control input indicates the parameters of the bitrate
are user-settable. Under the broadest reasonable interpretation this means
the controlled bit rate is "user-settable." Appellant partially admits this
interpretation by arguing "the expected average bit rate is a function of the
program type, which may be entered by the user, and the available storage
space for this program, and thus, the bit rate is not set by the user." Reply
Br. 4 (emphasis added). Therefore, the bit rate is at least in part controlled
by program type entered by the user.
However, the bit rate as a quantity of data bears no relation to a
priority associated with a recording. The Examiner does not provide
sufficient evidence or explanation on how "specifying the bit rate" or
"program type" teaches or suggests the disputed limitation as a priority
indicator. See Ans. 7. Nor is it apparent without explanation how either the
"program type" parameter or "bit rate" might function as a priority indicator.
We thus conclude that the rejection of claim 1 lacks the requisite
specificity needed to establish a prima facie case of unpatentability. The
Examiner bears the initial burden of presenting a prima facie case of
unpatentability (In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). A
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Appeal2014-003576
Application 11/329,939
prima facie case is established when the party with the burden of proof
points to evidence that is sufficient, if uncontroverted, to entitle it to prevail
as a matter of law. See Saab Cars USA, Inc. v. United States, 434 F.3d
1359, 1369 (Fed. Cir. 2006). Here, that burden has not been met in a
manner enabling proper review. For us to sustain the Examiner's rejection,
we would need to resort to impermissible speculation or unfounded
assumptions or rationales to cure the deficiencies in the factual bases of the
rejection before us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, we agree that the Examiner erred as the analysis in the
Examiner's rejection is not sufficient to show that claim 1 is unpatentable
without further explanation.
CONCLUSION
Appellant has established that the Examiner erred in rejecting claims
1-9 as being unpatentable under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's rejections of claims 1-9 as set forth above.
REVERSED
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